USPTO to Cease Supplying
Paper Copies of Cited
U.S. Patent References in
International Applications
In June 2004, the United States Patent and Trademark Office
(Office or USPTO) began the phase-in of its E-Patent Reference program
by: (1) providing downloading capability of the U.S. patents and U.S.
patent application publications cited in Office actions via the
E-Patent Reference feature of the Office's Patent Application
Information Retrieval (PAIR) system; and (2) ceasing to mail
paper copies of cited U.S. patents and U.S. patent application
publications with office actions. A notice announcing these changes was
published in the Official Gazette. See USPTO to Provide
Electronic Access to Cited U.S. Patent References with Office Actions
and Cease Supplying Paper Copies, 1282 Off. Gaz. Pat. Office
109 (May 18, 2004). The same notice also announced an exception,
with respect to item (2), for citations made during the international
stage of an international application under the Patent Cooperation
Treaty (PCT).
Effective upon publication of this notice in the Official
Gazette, international applications will no longer be subject to the
previously announced exception. Specifically, the USPTO will no longer
mail paper copies of cited U.S. patents and U.S. patent application
publications in international applications. Applicants may obtain
copies of cited U.S. patents and U.S. patent application publications
from the USPTO's Internet Web site, from the USPTO Office of
Public Records, and/or from commercial sources. The USPTO will continue
the practice of supplying paper copies of foreign patent documents and
non-patent literature with Office actions.
Questions about this notice may be directed to Richard Cole,
Senior Legal Examiner, Office of PCT Legal Administration (OPCTLA), at
Richard.Cole@uspto.gov.
June 11, 2007 JOHN DOLL
Commissioner of Patents